Visae Patentes

On the ksnh::law blog we take exceptional care about the discussion on and legal development of protection of computer-implemented inventions, aka 'software patents'.

With our latest posting we completed a small series of three articles on the respective legal foundations of and the examining practise in this field of European and German patent law. 

EPO Examining Practice:
Patents for Software? How the EPO Examines Software Inventions and what Lessons can be Learned.
This article provides an in-depth analysis of the extended problem/solution approach, the most important formal examining scheme for software inventions as developed by the Boards of Appeal around the turn of the century. The specific characteristics of that approach is that non-technical features of a claim can be considered as prior art upon examining inventive step – to the detriment of applicants (!). The second headnote of the Comvik decision T 641/00 puts this important finding like that:

II.  Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.

Consequently, applicants and especially their patent attorneys should make sure that the specification and the claims do not at all comprise non-technical aspects or or only to the required extent, in order to prevent that proper and limiting technical features are “devaluated”.


EPO Legal Foundations (Boards of Appeal Case Law):
EPO Case Law on Patentability of Software Inventions From the 80ies Until Now. 
The legal development in this field did not always go linearly and some approaches were abandoned or modified throughout the years. However, since the G 3/08 opinion basically affirmed the status quo, i.e. the pragmatic problem-solution approach as sketched in T 641/00 (COMVIK) and T 258/03 (Hitachi), case law has reached a rather stable situation, providing legal certainty for applicants of software inventions. Thus, in this particular question, Europe appears to be one step ahead of the US and other important patent jurisdictions in the world.


German Practice and Case Law:
German Federal Court of Justice Confirms New German Approach To Software Patent Examination
In the past three years we were handed a number of quite interesting decisions from the German Federal Court of Justice, especially

• X ZB 22/07 ("Control of Examination Modalities") of 20 January 2009 (comments)
• Xa ZR 4/07 ("glass bottle analysis system") of 4 February 2010 (comments)
• Xa ZB 20/08 ("Dynamic Document Generation") of 22 April 22 2010 (comments)
• X ZR 47/07 ("Reproduction of Topographic Information”) of 26 October 2010 (comments) 
• X ZR 121/09 ("Web Page Display") of 24 February 2011.

By the latter decision, the German two-stage approach to examination patent-eligibility of software-related inventions can be considered established.

Even though the Germany approach resembles the EPO's approach, it is not identical with it. The difference between the approaches might be illustrated by the fact that a pure business method implemented on a conventional computer or computer network would in Germany be excluded as a “computer program as such” without even considering prior art, while the EPO would rejected this method for lack of inventive step since its differences over prior art only involve non-technical features.

In Germany, applicants of software inventions will be on the safe side if the invention is claimed within an embedded system framework, i.e. as a method controlling a technical apparatus or collecting, evaluating and processing (technical) data by means of a technical apparatus.

The recent development of German case law is to be considered positive for applicants of software inventions, as it overcomes the earlier investigation of the individual case and thus creates legal certainty due to an easier-to-understand and thus easier-to-adopt examination systematics.

The first two articles on our ksnh::law blog in 2012 have drawn a promising but fragile picture on the condition of the Unitary Patent and Unified Patent Court in the beginning of 2012.

It certainly is a sign of progress (although some would say in the wrong direction) that the Secretariat of the EU Council is about to finalise the Regulation for implementing the Unitary Patent (see Document CM 1068/12). Apparently, the dice is cast with respect to the Unitary Patent and, thus, with respect to the highly controversial question as to whether or not Articles 6 to 8 (effects of patents) should remain in the proposed Regulation so that substantive patent law will be subject to review by the Court of Justice of the European Union in future.

As opposed to the opinion of some players (and some bloggers) but in line with others (see e.g. here, sec 1.2.2), it is the position of the ksnh::law blogging team that,

when having a look to the overall structures of patent law, it appears to be completely coherent to include these provisions just into the Regulation (which replaces national patent law comprising similar statutory clauses).

But, as we all know, further problems need to be solved in case of the Agreement on the Unitary Patent Court, especially the "things that are not so difficult", as addressed by EU Commission President Barroso below, namely the decision as to where the important Central Division of the Unified Patent Court will be situated. Candidate cities with good prospect are reported to be London, Paris, and Munich. It is expected that this stuck issue will have to be decided on the level of the heads of government by lateral talks between Prime Minister David Cameron, President Nicolas Sarcozy and Federal Chancellor Angela Merkel on the margins of some EU meeting. 

JM Baroso and H Thorning-Schmidt meet on 12 January 2012 in Copenhagen

Officially, the new year began for the European patent system project with the Danish administration under social-democrat Prime Minister Helle Thorning-Schmidt taking over the Presidency of the EU Council from Poland and making clear that the EU Patent Package (Directive on Unitary Patent; Agreement on Unified Patent Court) is one of the (many) key issues to be resolved in the first half of 2012 (see Program of Danish Presidency):

Special emphasis will be on the directives on [...] the common European Patent system [...].

Frankly we are almost there; there are now some divisions between France, Germany and Britain on things that are not so difficult. We can finalise the Community patent that we have been discussing for 30 years so it is about time to come to a solution and I know that Denmark will put its influence to find a solution.

In a posting on ksnh::law titled "EU Patent Package: JURI has Spoken, But What did it Say?" we report on what - presumably - has happened in the JURI meeting on December 20, in which the EU Parliament's Legal Affairs Committee voted on the three separate resolutions/agreements of the so called 'EU Patent Package', i.e.

• Enhanced cooperation in the area of the creation of unitary patent protection (JURI/7/05848).
• Enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements (JURI/7/05847).
• Jurisdictional system for patent disputes (JURI/7/06168).

As this press release later reported that JURI "backed a political deal struck last 1 December between Parliament and Council negotiators on the so-called 'EU patent package', questions were asked by observers, as to what Regulation and Draft Agreement JURI actually voted on, since the Competitive Council meeting on December 5 failed at least over a dispute between Great Britain and Germany (and maybe also France) as to the question of the seat of the Central Division of the future Unified Patent Court, so that there simply is no ‘EU Patent Package’ that the EU Council agreed on and JURI is satisfied with, due to the issues left unresolved at the December 5th's Competitiveness Council meeting (see earlier ksnh::law posts [1], [2], [3]).

We thus raised the point that the drafts were voted on yesterday are presumably the same that well-mandated JURI rapporteurs (Bernhard Rapkay, Raffaele Baldassarre, Klaus-Heiner Lehne) carried into the back-room negotiations with the Council on December 1 (see press release) in preparation of the December 5 Competitiveness Council metting (see here). 

Further to this, well-connected anti-software-patent campaigner @gibus aiming at putting an "EU flag into EPO" - i.e. to prevent that settled EPO case law on patent-eligibility of software-implemented inventions will be applicable to the future Unitary Patent - explained in a comment on our posting

So, what has been voted by JURI on Tuesday, was only what has been agreed with the Council in trilogue. No other amendment has been accepted (including Wikström/EPLAW/Jacob amendments to delete arts 6-9 from the regulation). Even amendements suggested and voted by ITRE committee for opinion have not been incuded. (for eg. ITRE Am. 11 recalling that the “rights conferred by the European patent with unitary effect shall accord with rights conferred by the Treaties and Union law”, which is something the regulation cannot escape) have been rejected.

But at least one thing is clear, the Warsaw initialling ceremony to finalise the text of the Agreement, as announced by the Polish Presidency for December 22 (see here), was quitely omitted and the incomming Danish Presidency will now take over. 

As noticed in this tweet under @ksnhlaw, a fact sheet summarising the Priorities of the Danish Presidency announces that

[a] second objective of the Danish Presidency [after economics and finance] will be to continue the development of the single market in order to achieve its full growth potential. [...] The Danish Presidency intends to work to move the twelve key initiatives set out in the Single Market Act forward as far as possible. Special emphasis will be on the directives on public procurement, the standardisation package, revision of the accounting standards, the venture capital proposal the common European Patent system and better enforcement of the posting of workers directive. [...]. 

European Parliament, Strasbourg, France, Home of JURI

Today's meeting of the European Parliament's Legal Affairs Committee (JURI) will see the votes on the different parts of the so called EU Patent Package. According to the draft agenda the voting time is set to 10.00 to 12.30 and will cover nine votings among which are

• 18. Enhanced cooperation in the area of the creation of unitary patent protection, JURI/7/05848, Rapporteur: Bernhard Radkay (S&D), 2011/0093(COD), COM(2011)0215 – C7-0099/2011 (PR – PE472.059v02-00, AM – PE475.775v01-00, CM – PE467.178v01-00, CM – PE467.283v01-00, AD – PE472.085v02-00, AM – PE473.869v01-00)
• 19. Enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements, JURI/7/05847, Rapporteur: Raffaele Baldassarre (PPE), 2011/0094(CNS), COM(2011)0216 – C7-0145/2011 (PR – PE472.334v02-00, AM – PE475.788v01-00)
• 20. Jurisdictional system for patent disputes, JURI/7/06168, Rapporteur: Klaus-Heiner Lehne (PPE), 2011/2176(INI) (PR – PE472.331v01-00, AM – PE475.785v01-00, AD – PE472.079v02-00, AM – PE473.870v01-00, PA – PE473.880v01-00, AM – PE475.860v01-00).

But what is actually at stake, what exactly are JURI members voting for?


Two week earlier ksnh::law reported in an article titled "JURI mandates Rapporteurs to Negotiate Unitary Patent with EU Council Behind Closed Doors", that the three JURI Rapporteurs have been equipped on 22 November 2011 with a mandate (see agenda, nos. 33, 34, 35) to negotiate the EU Patent Package with the European Council in back rooms behind closed doors. (see e.g. press release as well as press reports [1] and [2]) to ensure that broad discussions and public comments would not endanger the ambitious time schedule for reaching an agreement. Clearly, such behind-the-doors negotiations are perfect situations for non-elected players to influence the decision making process in their particular interest.

Now that the negotiations between the EU Council and JURI ended on December 5 in confusion, speculations and ongoing criticism especially of the Court Agreement, the current condition and prospect of the EU patent project are increasingly obscure, as are the exact legal regulations JURI is voting on today. This especially holds for the Unified Patent Court Agreement, in which not only the seat of the central division appears to be unresolved but also some substantive legal issues (see here and here). 

As today's agenda states the well-known draft documents (Draft Agreement, Proposed Regulation) and JURI pre-negotiation positions (Rapkay: PE472.059v02-00, PE475.775v01-00; Baldassarre: PE472.334v02-00, PE4725.788v01-00; Lehne: PE475.785v01-00, PE472.331v01-00) as if there never were any discussions between JURI and the Competitive Council on that epic topic, observers and stakeholders are totally lost and will be surprised when they one day realise what exactly obtained a 'yes' or 'no' by JURI on 20 December 2011.

If the JURI version comes near to what is presented (leaked?) here, industry and patent professionals may have a Déjà Vu experience in view of the amendments the EU Parliament demanded on the so called Software Patent Directive in 2005.

If such measures are taken by elected members of a democratic parliament, the respective matter must be in great danger or unfortunate for policy makers or both. In any case, this information hiding attitude - please excuse my openness - is a shame for any democratic legislative process, even if it only affects such minor important issues like the European internal market.

UPDATE (20.12.2011): Now as the voting is over, an official EU Parliament press realease annonces that "EU patent gets Legal Affairs Committee green light". The essential statement is:

[...] Legal Affairs Committee MEPs backed a political deal struck last 1 December between Parliament and Council negotiators on the so-called "EU patent package" (unitary patent, language regime and unified patent court). If Parliament as a whole and the Council confirm the deal, a new EU patent will be created. [...]

Spotaneously one would like to ask which version of the EU patent are they exactly talking about?

The "political deal struck last 1 December" apparently refers to the allegedly done deal the Parliament announced on 1 December. However, that "done deal" only refered to the closed door negotiations between the EU Council under the Polish Presidency and JURI (see [1], [2], [3]), which wasn't that "done" as it turned out after the EU Council meeting of 5 December 2011 (see here and here). Sadly but expectedly, neither the voting nor the press statement helped to lift the fog.







(photo 2011 by Anka Pandrea via Flickr under a CC license)